707.07(l) Comment on Examples [R-10.2019]
The results of the tests and examples should not normally be questioned by the examiner unless there is reasonable basis for questioning the results. If the examiner questions the results, the appropriate claims should be rejected as being based on an insufficient disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). See MPEP §§ 2161 – 2164.08(c) for a discussion of the written description and enablement requirements of 35 U.S.C 112. The applicant must reply to the rejection, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to believe that the result would be as predicted. Care should be taken that new matter is not entered into the application.
If questions are present as to operability or utility, consideration should be given to the applicability of a rejection under 35 U.S.C. 101. See MPEP § 2107et seq.